When is service completed under Section 21(2) of the Trade Marks Act: Del HC explains

By Ananyaa Banerjee and Arghya Samaddar

BRIEF FACTS

The Applicant/Appellant, Mars Incorporated, is an international confectionary company, which had filed the trade mark application (as below), which was opposed by the Opponents/Respondents, Celebration and Cadbury UK Limited, respectively.

The dispute arose as, the Trade Mark Registry contended that, the notices of opposition (no. 1141733 and 1141655) were purportedly served by the Registry on the Applicant/Appellant vide dispatch no. 5527006 and 5527087, respectively on March 07, 2022 and the Applicant/Appellant had failed to file their counter statement within the statutory deadline of two months (i.e., within May 07, 2022) from such date of service.

The Registry had issued the Public Notice dated February 06, 2023[1] thereby, abandoning numerous applications, including the present application no. 4083355 treating it as deemed to be abandoned due to non-prosecution under Section 21(2) of the Trade Marks Act, 1999.

CONTENTIONS

Applicant/Appellant’s contentions

The Applicant/Appellant had contended that, the said notices of oppositions were not served by the Registry upon them at all by e-mail or courier. Therefore, the two months statutory deadline to file the counter statement from the service date of the notice of opposition had not commenced. The Applicant/Appellant had also filed their Affidavit before the Trade Mark Registry confirming non-receipt of the said notices of oppositions via e-mail, courier or, post.

In the meantime, the Intellectual Property Attorneys Association (IPAA), being aggrieved by the Registry’s mass abandonment of trade marks applications vide its Public Notice dated February 06, 2025, had filed a writ petition[2] before the Hon’ble Delhi High Court. On April 13, 2023, the Trade Marks Registry undertook to withdraw the said Public Notice and restore the abandoned applications[3].

Nevertheless, the Trade Mark Registry passed an order dated July 20, 2023 thereby, abandoning the captioned application due to non-prosecution under Section 21(2) of the Act.

REVIEW PETITION

The Applicant/Appellant filed a review petition on September 04, 2023 against the order dated July 20, 2023. The Appellant had submitted letter dated March 06, 2023 along-with supporting documents, Affidavit deposing non-service of the notices of opposition. In view of the non-service, the Registry’s Public Notice dated February 06, 2023 does not apply as, “the provision under rule 42(5) of the Trade Marks Rules, 2017 has not been complied by the Trade Mark Office.”

The relevant provision under the Rules is reproduced below.

Rule 42(5) – A copy of notice of opposition shall be ordinarily served by the Registrar to the applicants within three months of the receipt of the same by the appropriate office.

Moreover, the Applicant/Appellant contended that, the order dated July 20, 2023, abandoning the application had been passed without providing opportunity of hearing.

However, the Registrar passed an order dated October 25, 2024 thereby, upholding the order dated July 20, 2023 and the abandonment of the present application.

APPEAL

The Applicant/Appellant had filed the present appeal before the Hon’ble Delhi High Court where, notice was issued on December 23, 2024, challenging the Registrar’s order dated October 25, 2023.

Respondent’s contentions

The representative of the Trade Marks Registry (Respondent No. 1) submitted that, the Registry did not receive any acknowledgement of the e-mail sent to the Appellant/Applicant with the notices of opposition.

The Opponent (Respondent No. 3) contended that, the notice of opposition was served on the Appellant/Applicant at the e-mail address provided in their application, which is confirmed from the Registry’s records.

DECISION AND ANALYSIS:

The Hon’ble Delhi High Court vide its order dated April 02, 2025 highlighted the relevant provisions under the Trade Marks Act, 1999 and Rules, 2017.

Rule 18(2) of the Trade Marks Rules, 2017 – “Any communication or document so sent shall be deemed to have been served, at the time when the letter containing the same would be delivered in the ordinary course of post or at the time of sending the email”

However, Section 21(2) of the Trade Marks Rules, 2017 provides that

“the Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application”

The Hon’ble court observed that the aforementioned provisions are inconsistent. As per Rule 18(2), the notice of opposition would be considered deemed as served once, the e-mail has been sent, even though, the e-mail may not have reached the Applicant at all. On the other hand, Section 21(2) clarifies that, the Applicant’s deadline to file the counter statement shall commence once, the notice of opposition has been received by the Applicant.

The Hon’ble court interpreted Rule 18(2) of the Rules, 2017 purposively in order to align with the legislative intent of Section 21(2) of the Act, 1999. The Hon’ble court relied and aligned with the interpretations of the aforementioned provisions provided in the precedents as below.

Samsudeen A v. Registrar of Trade Marks (2024 SCC OnLine Mad 6309) –

The Hon’ble High Court of Madras observed that, Rule 18(2) of the Rules, 2017 shall be interpreted purposively in align with the legislative intent with the objective to safeguard the interest of the Applicants.

Rishabh Jain v. Registrar of Trade Marks (2023 SCC OnLine Del 7990) –

The Hon’ble Delhi High Court observed and held that, since, the notice of opposition was not served by the Registry on the e-mail address provided by the Applicant on the form, the impugned order abandoning the application was set aside.

Purushottam Singhal v. Registrar of Trade Marks (2023 SCC OnLine Del 1641) –

The court observed and held that, since, there is no evidence showing that, the notice of opposition was served on the Applicant, the order passed by the Registry under Section 21(2) of the Act, 1999 is misguided.

The court held that since, the Applicant/Appellant has been able to show that, the notices of opposition have not been served on them or, their counsel via e-mail or, otherwise, the Registry impugned order dated 25th October 2024 (dismissing the Appellant’s Review Petition) was set aside and directed the notices of opposition to be served by the Registry to the counsel of the appellant within two weeks.

CONCLUSION

In the present case, the Hon’ble court has interpreted Rule 18(2) purposively, while taking in to consideration the legislative intent behind Section 21(2) of the Act, the purpose of Rules being to support the Act.

Previously, as well, in Ramya S Moorthy v. Registrar of Trade Marks[4] (2023 SCC OnLine Mad 5305), the Madras High Court examined the aforementioned provisions and held that, any document sent by the Registrar shall be considered served only when, the said document has been received by the recipient, which aligns with the interpretation of Section 21(2) of the Act.

The Bombay High Court in Coaster Shoes Company Pvt. Ltd. vs. Registrar of Trade Marks[5] [Commercial Miscellaneous Petition (L) No.4309 of 2023] had also observed and held that, only when, the Registry’s Counter Statement has been received by the Opponent, the deadline to file their Affidavit shall commence.

The Hon’ble Courts’ aforementioned interpretation safeguards the Applicant/Opponent’s rights and interest in an event where, the Registry may have sent the Notice of Opposition/Counter Statement on the Applicant/Opponent though, the document did not reach them due to technical glitches/reasons such as, the Registry may have sent the document to an erroneous e-mail ID, the e-mail containing the document may have bounced-back due to system failure etc.

In this regard, the decisions of the Hon’ble court is relevant and a positive step towards protecting the Applicant/Opponent’s rights and against unjustified abandonment of the Application/Opposition where, the parties are not at fault or non-compliance.

[1]https://ssrana.in/articles/abandonment-of-marks-under-ipindia/

[2]Intellectual Property Attorneys Association (IPAA) & Anr. v. Controller General of Patents Designs & Trade Marks (CGPDTM) & Anr. [W.P.(C)-IPD 21/2023]

[3]https://ssrana.in/articles/abandoned-trademark-applications-restored-delhi-high-court/

[4]https://ssrana.in/articles/trademark-opposition-sevrice-notice/

[5]https://ssrana.in/articles/settling-the-ambiguity-of-proper-service-of-counter-statement-coaster-shoes-v-registrar/